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Case 2:17-cv-07496-MWF-AS Document 40 Filed 01/30/18 Page 1 of 35 Page ID #:625

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

Present: The Honorable MICHAEL W. FITZGERALD, U.S. District Judge

Deputy Clerk: Court Reporter:
Rita Sanchez Not Reported

Attorneys Present for Plaintiff: Attorneys Present for Defendant:
None Present None Present

Proceedings (In Chambers): ORDER RE: PLAINTIFFS’ MOTION FOR
PRELIMINARY INJUNCTION [28]

Before the Court is a Motion for Preliminary Injunction (the “Motion”) filed by
Plaintiffs Universal City Studios Productions LLLP (“Universal”), Columbia Pictures
Industries, Inc. (“Columbia”), Disney Enterprises, Inc. (“Disney”), Twentieth Century
Fox Film Corporation (“Fox”), Paramount Pictures Corporation (“Paramount”),
Warner Bros. Entertainment, Inc. (“Warner Bros.”), Amazon Content Services, LLC
(“Amazon”), and Netflix Studios, LLC (“Netflix”), filed on December 7, 2017.
(Docket No. 28). On December 28, 2017, Defendant TickBox TV LLC (“TickBox”)
filed an Opposition. (Docket No. 34). On January 12, 2018, Plaintiffs filed a Reply.
(Docket No. 37).

The Court has read and considered the papers filed in connection with the
Motion, and held a hearing on January 29, 2018.

For the reasons set forth below the Motion is GRANTED. IT IS ORDERED
that a preliminary injunction maintaining the status quo – i.e., compelling TickBox to
maintain the current iteration of the Device’s user interface, which seemingly no longer
contains links to the themes and addons that Plaintiffs have specifically flagged as
problematic in their Complaint and Motion papers (e.g., Paradox, Lodi Black, and
Covenant) – shall issue immediately.

During the hearing, the Court posed several questions to counsel that go to the
propriety and feasibility of issuing a preliminary injunction that goes beyond requiring
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

TickBox to maintain the changes to the Device’s user interface that it has already
implemented. Specifically:

• What themes, if any, appear on the Device’s current user interface (i.e., on
the home screen or on the screens that appear upon clicking any of the
tiles on the home screen)?

• If themes do remain, do they contain links to the Covenant addon or any
other addons that provide access to unauthorized streaming versions of
Plaintiffs’ copyrighted works?

• Plaintiffs request that the Court direct TickBox to perform a software
update that removes from every already-distributed Device all “themes,”
“builds” or “addons” that facilitate unauthorized public performances of
Plaintiffs’ copyrighted works, including Spinz, Lodi Black, Stream on
Fire, Wookie, Aqua, CMM, Spanish Quasar, Paradox, Covenant, Elysium,
UK Turk, Gurzil, Maverick, and Poseidon. Have Plaintiffs tested each of
these themes and/or addons? Does each one of them provide access to
unauthorized versions of Plaintiffs’ copyrighted works?

• What is the best way to address the issue of themes (such as Paradox or
Lodi Black) and/or addons (such as Covenant) that provide access to
unauthorized versions of Plaintiffs’ copyrighted work but that Device
users have already installed? Is there a way to address this issue?
Plaintiffs frame the solution as a simple software update whereby
TickBox removes these previously-downloaded themes from its
customers’ Devices. TickBox suggests that, in order to remove previously
downloaded themes or addons from its customers’ Devices it would need
to “hack into and delete content which its customers have downloaded,”
something that TickBox contends it “has no right to perform, and which
could expose [it] to thousands of potential claims.” TickBox obviously
has the right and the capability to perform generally applicable software

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

updates, as it did in October and December. Is it possible to perform a
similar software update whereby all Devices are reset, previously
downloaded themes and addons are deleted, and TickBox’s customers
start anew with an offending-theme-free user interface? Why would this
expose TickBox to legal claims from its customers (particularly in light of
the fact that it was done pursuant to court order)?

Keeping these questions and the discussion that follows in mind, counsel for
Plaintiffs and TickBox, working with others who possess relevant technical expertise
as necessary, shall negotiate and attempt to reach agreement upon a stipulated
preliminary injunction that will supersede the Court’s initial preliminary injunction
order. If counsel are able to reach an agreement, they shall file a stipulated preliminary
injunction order by February 7, 2018. In the event that counsel are unable to reach an
agreement, Plaintiffs and TickBox shall each file a proposed preliminary injunction
order along with a memorandum of law, not to exceed seven pages, explaining their
positions by February 12, 2018.

I. BACKGROUND

The following facts are alleged in the Complaint or included in declarations filed
by the parties in connection with the Motion.

A. Plaintiffs and their Copyrighted Works

Plaintiffs and their affiliates create and distribute motion pictures and television
programs and own or control the copyrights relating to those motion pictures and
television programs. (Complaint ¶¶ 4-12, 19-20, Ex. A). Some of Plaintiffs’ recent
titles include Despicable Me 3 (Universal), Spiderman: Homecoming (Columbia),
Pete’s Dragon (Disney), War for the Planet of the Apes (Fox), Zoolander 2
(Paramount), Dunkirk (Warner Bros.), Mozart in the Jungle (Amazon), and Stranger
Things (Netflix). (Id., Ex. A).

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

Plaintiffs or their affiliates own or have the exclusive U.S. rights to reproduce,
distribute, and publicly perform their copyrighted works, including by means of
streaming those works over the internet. (Id. ¶ 21). Plaintiffs authorize the distribution
and public performance of their copyrighted works in various formats and through
multiple distribution channels, including, for example: (1) for exhibition in theaters; (2)
through cable and satellite television services; (3) through authorized internet video-
on-demand services, including those operated by iTunes, Google Play, Hulu, VUDU,
Netflix, and Amazon (affiliates of Plaintiffs Netflix and Amazon); (4) on DVDs and
Blu-ray discs; and (5) for broadcast on television. (Id. ¶ 22).

Plaintiffs have not authorized TickBox, the operators of third-party sites to
which the TickBox TV device (the “Device”) connects, or TickBox’s customers, to
exercise any of Plaintiffs’ rights under the Copyright Act, 17 U.S.C. § 106. (Id. ¶ 23).

B. TickBox and its Device

TickBox is a Georgia limited liability company that sells the relevant Device and
operates an eponymous website (www.tickboxtv.com), on which it promotes and sells
the Device and offers “live chat” technical support. (Complaint ¶¶ 13, 15; Declaration
of Amy Bruckman in Opposition to Plaintiff’s Motion for Preliminary Injunction
(“Bruckman Decl.”) ¶¶ 3, 6; Declaration of Jeffrey Goldstein in Opposition to
Plaintiff’s Motion for Preliminary Injunction (“Goldstein Decl.”) ¶¶ 5-6).

The Device allows users to perform many of the functions of a computer or
tablet on their television set or other monitor, including browsing the internet and
streaming media content through applications. (Goldstein Decl. ¶ 6). The Device is a
small computer that operates on the Android system. (Bruckman Decl. ¶ 6;
Declaration of Prof. Ian Foster in Support of Plaintiffs’ Motion for Preliminary
Injunction (“Foster Decl.”) ¶ 9). The hardware within the Device is comprised of the
type of components found in most home computers, including a 64 Bit CPU, Quad
Core processer, eight gigabytes of storage, one gigabyte of SDRAM, a graphics card,
and hardware allowing users to connect to the internet. (Id. ¶ 7). Below is a picture of
the Device:
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

(Foster Decl. ¶ 9, Fig. 1).

As shown in the picture, the Device has various ports for connecting to other devices
and a power source, including an HDMI port, an Ethernet port, and multiple USB
ports. (Id. ¶¶ 9-10). The Device connects to a television through the HDMI port and
to the internet through either the Ethernet port or wirelessly over a Wi-Fi network, as
represented in the picture below:

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

(Id. ¶¶ 9-10, Fig. 2).

C. Pre-Lawsuit User Experience

The following is a description of what a Device-user would have experienced
prior to Plaintiffs’ commencement of this action. As discussed below, TickBox has
made some changes to its user interface following receipt of the Complaint and the
Motion.

Upon connecting the Device to a television and the internet, a user is prompted
by on-screen pictures and messages directing her to download and install software that
will ultimately allow the user to view online content on their television screen via the
Device. (Id. ¶¶ 12-16). Once the relevant software is installed, upon turning on the
Device and the television, a user will see a TickBox home page where he may choose
among eight clickable options: (1) Welcome to TickBox TV; (2) WATCH MOVIES
TV SPORTS; (3) Select your Theme; (4) Android Apps; (5) Live TV; (6) Settings; (7)
OneClick Webinar; and (8) Support. (Id. ¶ 16). Below is a picture of the TickBox
homepage:

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

(Id., Fig. 7).

When a user selects the “WATCH MOVIES TV SPORTS” option for the first
time, he receives a message to “Please close this window and install a theme or select
IPTV Premium”; the only option is to close the screen and return to the TickBox TV
home page. (Id. ¶ 17). Back at the home page, the user can click on the “Select your
Theme” option. In this context, “theme” refers to a customized version of software
known a “Kodi.” (Id. ¶ 18).

Kodi is media-player software that organizes, stores, and plays video files. Kodi
is “open-source,” which means that its creators have published its source code so that
third-party programmers can modify it and create their own versions. Kodi also
supports third-party programs called “addons,” which are designed to run in
conjunction with Kodi and provide supplemental features. (Id.). Anyone with the
requisite skill and knowledge can create addons for Kodi, and there are hundreds of
addons available, many of which allow a user to search through catalogs of video
content available online and stream films and television shows. (Id.; Bruckman Decl.
¶¶ 9-10).

When a user clicks the “Select your Theme” option, a screen offering several
Kodi “themes” (also referred to interchangeably as “builds”) appears. (Foster Decl. ¶
20). The various Kodi themes differ in their look and feel. (Id. ¶ 19). The preloaded
Kodi theme options include “Spinz,” “Stream on Fire,” “Wookie,” “Paradox,” “Lodi,”
“Aqua,” “CMM,” and “Spanish Quasar,” as depicted below:

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

(Id. ¶ 20, Fig. 9).

Each of these themes contain a bundle of Kodi addons, including “streaming”
addons that provide users with lists of film and television titles and allow users to
attempt to access selected titles from various internet-linked sources. When a
streaming addon finds a working source for a desired title, the addon facilitates the
transmission of a stream from the remote content source to the Device. When a
working source is located, the user must agree to a general disclaimer absolving the
“author” (seemingly the “theme” creator) of any responsibility for the content or
reliability of the addon, as depicted below:

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

(Id. ¶ 21, Fig. 10). Clicking “I AGREE” results in the automatic downloading and
installation of the selected theme (or build), and the Device then prompts the user to
“launch the build” – i.e., run the selected customized (by a third party) version of Kodi.
(Id. ¶¶ 22-23). Once the selected theme is installed, clicking the “WATCH MOVIES
TV SPORTS” title on the home screen will launch the installed theme. (Id. ¶ 23). A
user may install a different theme through this same process at any time. (Id. ¶ 29).

D. Accessing Infringing Content with TickBox’s Device

Device users are able to access unauthorized versions of copyrighted content
through their selected themes. For example, Professor Foster installed the “Paradox”
theme (mentioned above) for the purposes of this case. (Id. ¶ 25). The Paradox home
screen presents different categories of content, including “TV,” “TV SHOWS,”
“MOVIES,” and “KIDS,” as depicted below:

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

(Id. ¶ 25, Fig. 12). When a user selects one of the content categories, for example “TV
SHOWS,” a list of installed streaming addons that provide access to that category is
shown at the bottom of the screen. In the picture above, the featured addons are
“Elysium,” “UK Turk,” “Maverick,” “Gurzil,” “Covenant,” and “Poseidon.” These
addons allow a user to access film and television content available at disparate internet
locations. They allow a user to search for specific titles or to browse by other criteria,
such as genre or films currently in theaters. They compile lists of sources for a
selected title, and allow the user to select a source. If the selected source is
unavailable, the addon automatically tries others. The addon plays the selected content
within the Kodi theme environment (in this case Paradox), allowing the user to control
the content (e.g., pause, rewind, fast-forward) within his selected theme. (Id. ¶ 26).

A user who selects the “Covenant” addon would be presented with a menu
offering, among other things, “Movies,” “TV Shows,” and “Search.” (Id. ¶ 30). If the
user selects “Movies,” he will be brought to another screen that presents different

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Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

categories of movies, such as “Most Popular,” “Box Office,” and “In Theaters,” as
depicted below:

(Id. ¶ 30, Fig. 13). When a user selects a category, he will be presented with a list of
movies that fall within the particular category. (Id. ¶ 31).

For example, on November 22, 2017, Professor Foster selected the “In Theaters”
category and accessed a list of recently released movie titles (along with year of release
and running time) that were still (at least in an authorized manner) being shown
exclusively in theaters, as depicted below:

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(Id. ¶ 31, Fig. 14).

Once the user clicks on a title, he is informed that Covenant is searching for
“providers” of that particular title, and then is shown how many sources have been
located and their quality. For example, Professor Foster clicked on Fox’s Murder on
the Orient Express, and Covenant located versions of the film in varying quality (e.g.,
4K, 1080p, 720p, and standard definition), from 179 sources, as depicted below:

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

(Id. ¶ 32, Fig. 15). Once the compilation process (which generally takes less than a
minute) is complete, the user receives a list of providers from which to stream the
selected title along with information about the quality of each version. (Id. ¶¶ 32, 34).
If the first entry a user selects does not work, Covenant will automatically try other
options until it locates a functional version. (Id. ¶ 34). Once a functional link is
located, Covenant will play the selected title within the pre-installed theme
environment (in this case, Paradox). (Id. ¶ 35).

Professor Foster was also able to access copyrighted content through themes
other than Paradox. For example, he installed the Lodi Black theme and utilized the
Covenant addon within it to browse titles of movies that were otherwise only in the
theaters at that time, including Murder on the Orient Express. (Id. ¶ 36). While the
look and feel of the Covenant addon is different within the Lodi Black theme than in
the Paradox theme, it is functionally the same. (Id. ¶ 36). A screen shot of the
Covenant “In Theaters” screen within the Lodi Black theme is depicted below:

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Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

(Id., Fig. 17).

E. TickBox’s Advertising and Customer Support

Plaintiffs have compiled a variety of TickBox advertising and promotional
material and support-related communications with Device users to bolster their
argument that TickBox has actively encouraged copyright infringement.

Advertising. TickBox has advertised its Device as a way to “cut the cord” if
“you’re sick of paying high monthly fees and expensive bills for your regular cable …
and premium cable channels like HBO and SHOWTIME… [o]r if you’re tired of
wasting money with online streaming services like Netflix, Hulu, or Amazon Prime…”
(Complaint ¶ 1; Declaration of Kelly M. Klaus in Support of Plaintiffs’ Motion for
Preliminary Injunction (“Klaus Decl.”), Ex. A). In the same advertisement, it directed
prospective customers to “[s]imply plug the Tickbox TV [the Device] into your current
television and enjoy unlimited access to ALL the hottest TV shows, Hollywood
blockbusters and LIVE sporting events in one convenient little device …
ABSOLUTELY FREE.” (Complaint ¶ 1; Klaus Decl., Ex. A). That advertisement is
depicted below:
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Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

(Klaus Decl. Ex. A).

TickBox has advertised that its Device “searches the internet where it will locate
and stream … virtually any television show [or] [H]ollywood movie … without you
having to worry about paying rental fees or monthly subscriptions.” (Complaint ¶ 25;
Klaus Decl., Ex. B). That advertisement is depicted below:

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Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

(Klaus Decl., Ex. B)

Prior to this lawsuit, TickBox’s home page referred to the Device as a means to
“Get Instant Access to Any Movie, TV Show, or Sporting Events… Without Signing a
Contract or Paying a Monthly Service Fee!” (Complaint ¶ 42; Klaus Decl. Ex. C).
That advertisement is depicted below:

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Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

(Klaus Decl., Ex. C).

Customer support. TickBox’s website and its Device home page contain links
for technical and other customer support, which provide information that would assist
an untrained user in accessing unauthorized copyrighted material. (Complaint ¶ 29;
Klaus Decl. ¶ 5, Ex. D). For example TickBox’s website contains a “How to search
for a Movie” instructional video, in which TickBox urges users to utilize the “Select
Your Theme” option on the Device’s home page. (Complaint ¶¶ 30, 31; Klaus Decl. ¶
5, Ex. D).

TickBox advises customers when certain themes are not functioning well and
recommends other themes. For example, a TickBox support message that Professor
Foster located said that TickBox had “noticed that a few of the themes are not
returning searches for movies or shows,” but that TickBox has “had good experience
with the Wookie Theme at this time.” (Foster Decl. ¶ 24, Fig. 11).

TickBox’s website also has a “Frequently Asked Questions” page. (Klaus Decl.
Ex. E). On that page, TickBox advises customers that they may “of course” “still [use]
Amazon Video, Netflix or Hulu on” the Device, but that “within a few days of using
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[the Device] you will find you no longer need those subscriptions.” (Id.). On another
question-and-answer page, TickBox advises customers that they “can see almost every
movie and TV series ever made” and “can even access movies and shows that are still
on Demand and episodes of TV that were just aired,” and “will never need to pay to
watch any of them.” (Id., Ex. F).

F. TickBox’s Post-Lawsuit Modifications

In October 2017, following Plaintiffs’ commencement of this action, TickBox
altered some aspects of the Device’s user interface and of its advertising. As to
advertising, the TickBox website homepage no longer refers to the Device as a means
to “Get Instant Access to Any Movie, TV Show, or Sporting Events… Without
Signing a Contract or Paying a Monthly Service Fee!” (Klaus Decl. ¶ 8). The
homepage now says: “[T]urn your TV into a content filled home theatre system
enjoying thousands of movies, TV shows and apps like Youtube, HBO Now and many
many more…” (Id.). The website still says that “Tickbox TV can search the entire
internet where it can locate and stream any television show, movie, sporting event,
music or game that is available for you to watch.” (Id.).

As to the Device’s user interface, in October 2017, TickBox relabeled the
“Select your Theme” option as “Select Streaming Channels.” (Goldstein Decl. ¶ 22).
When users click on the “Select Streaming Channels” option, they are now presented
with options to download apps from mainstream media companies such as ESPN and
A&E, in addition to various “themes” (and thereby addons). (Id. ¶¶ 23-24). Following
the filing of the Complaint, certain themes that provided access to the Covenant addon
were still available. (Foster Decl. ¶¶ 44-46). In December 2017, following Plaintiffs’
filing of this Motion, TickBox issued a second software update pursuant to which
“links to the remaining offending ‘Themes’” were removed. (Goldstein Decl. ¶ 26).

Professor Foster utilized the Device again on January 4, 2018. (Reply
Declaration of Prof. Ian Foster in Support of Plaintiffs’ Motion for Preliminary
Injunction (“Foster Reply Decl.”) ¶ 17). When he powered the Device on, it
automatically performed the software update that TickBox had issued in December in
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response to the Motion. (Id.). After the update was complete, the home screen was
revised so that the “My Apps & Addons” tile was renamed “My Apps,” and the
“Settings” tile was replaced with a Kodi icon tile, as depicted below:

(Id. ¶ 18, Fig. 3). Additionally, the “Lodi Black” theme was no longer listed within the
“Select Streaming Channels” option. (Id. ¶ 18). Professor Foster was still able to
access his previously-downloaded Paradox theme and the Covenant addon within it
(and all of the movies within Covenant, including Murder on the Orient Express) by
clicking on the “Media Player” tile on the home screen. (Id. ¶ 19).

II. DISCUSSION

Federal Rule of Civil Procedure 65 governs the issuance of temporary
restraining orders and preliminary injunctions, and courts apply the same standards to
both. Stuhlbarg Intern. Sales Co., Inc. v. John D. Brush & Co., 240 F.3d 832, 839 n.7
(9th Cir. 2001). In order to prevail on its Motion, Plaintiffs must demonstrate that (1)
they are likely to succeed on the merits; (2) they are likely to suffer irreparable harm in
the absence of preliminary relief; (3) the balance of the equities tips in their favor; and
(4) an injunction is in the public interest. Toyo Tire Holdings of Ams. Inc. v. Cont’l
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Tire N. Am., Inc., 609 F.3d 975, 982 (9th Cir. 2010) (citing Winter v. Nat. Res. Def.
Council, 555 U.S. 7 (2008)).

Plaintiffs must “make a showing on all four prongs.” Alliance for the Wild
Rockies v. Cottrell, 632 F.3d 1127, 1135 (9th Cir. 2011). The Ninth Circuit employs
the “serious questions” version of the “sliding scale” approach when applying the four-
element Winter test. Id. at 1134. “That is, ‘serious questions going to the merits’ and a
balance of hardships that tips sharply towards the plaintiff can support issuance of a
preliminary injunction, so long as the plaintiff also shows that there is a likelihood of
irreparable injury and that the injunction is in the public interest.” Id. at 1135.

A. Likelihood of Success on the Merits

Plaintiffs allege that TickBox is liable for intentionally inducing the
infringement of Plaintiffs’ copyrighted works and contributory copyright infringement.
(See Complaint ¶¶ 46-65).

In order to prevail on their copyright infringement claims, Plaintiffs will need to
demonstrate two basic things: (1) “ownership of the allegedly infringed material”; and
(2) violation of “at least one exclusive right granted to copyright holders under 17
U.S.C. § 106.” A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir.
2001). Plaintiffs have demonstrated that they own the allegedly infringed material.
(See Complaint Ex. A; Klaus Decl. Exs. G-PP). TickBox does not dispute the issue of
ownership.

Plaintiffs rely primarily on two cases to support their argument that Defendants
are liable for the infringement of their exclusive rights under an inducement /
contributory infringement theory: Metro-Goldwyn-Mayer Studios Inc. v. Grokster,
Ltd., 545 U.S. 913 (2005), and Columbia Pictures Industries, Inc. v. Fung, 710 F.3d
1020 (2013).

In Grokster, the Supreme Court held that “one who distributes a device with the
object of promoting its use to infringe copyright, as shown by clear expression or other
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affirmative steps taken to foster infringement, is liable for the resulting acts of
infringement by third parties.” Grokster, 545 U.S. at 936-37.

In Fung, the Ninth Circuit analyzed Grokster and held that a defendant may be
held liable for copyright infringement under Grokster’s inducement theory where four
elements are present: “(1) the distribution of a device or product [by the defendant], (2)
acts of infringement [by third parties], (3) an object [of the defendant] of promoting
[the device’s or product’s] use to infringe copyright, and (4) causation. Fung, 710 F.3d
at 1032.

1. Distribution of a device or product

In Fung, the Ninth Circuit explained that one may be liable for copyright
infringement under the Grokster inducement theory if he distributes a physical device
or product that is utilized for copyright infringement or if he provides a service that
facilitates copyright infringement. Id. at 1033 (“one can infringe a copyright through
culpable actions resulting in the impermissible reproduction of copyrighted expression,
whether those actions involve making available a device or product or providing some
service used in accomplishing the infringement”).

There is no doubt that TickBox’s distribution of the Device satisfies this first
prong of the Fung test. TickBox acknowledges as much. (See Opp. at 3).

2. Acts of infringement

Plaintiffs argue that TickBox and its Device facilitate the infringement of
Plaintiffs’ exclusive rights “to perform” their copyrighted movies and television shows
“publicly” pursuant to 17 U.S.C. § 106(4). (Mot. at 17). TickBox argues that: (1) it is
not the Device that facilitates infringement, but third-party themes over which TickBox
exercises no control; (2) Plaintiffs produced no evidence that anyone apart from
Plaintiffs’ expert has utilized the Device to access Plaintiffs’ copyrighted movies and
television shows; and (2) even if Device users have in fact utilized the Device to view
Plaintiffs’ copyrighted movies and television shows, the mere viewing of streaming
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content does not infringe upon Plaintiffs’ public performance rights. (See Opp. at 5-7).
The Court is not persuaded by TickBox’s arguments.

Third-party themes. TickBox argues that it simply “offers a computer, onto
which users can voluntarily install legitimate or illegitimate software” and that the
“product about which Plaintiffs complain is third-party software which can be
downloaded onto a myriad of devices, and which [TickBox] neither created nor
supplies.” (Opp. at 5). In Sony Corp. of America v. Universal City Studios, Inc., 464
U.S. 417 (1984), the Supreme Court addressed the question of whether Sony may be
held secondarily liable for copyright infringement as a result of its distribution of the
Betamax (the competitor to the VCR, when VCRs were first on the market), which
consumers could utilize to record copyrighted television programs. 464 U.S. at 423-
24. Looking to patent law’s “staple article of commerce” doctrine, under which
distribution of a component of a patented device will not violate the patent if it is
suitable for use in other ways, the Court held that Sony could not be liable solely on
the basis of distribution because the Betamax was “capable of commercially significant
noninfringing uses.” Id. at 442. In Grokster, the Court held that “where evidence goes
beyond a product’s characteristics or the knowledge that it may be put to infringing
uses, and shows statements or actions directed to promoting infringement, Sony’s
staple-article rule will not preclude liability.” Grokster, 545 U.S. at 935. Thus, the
fact that the Device is just a “computer” that can be used for infringing and
noninfringing purposes does not insulate TickBox from liability if (as discussed further
below) the Device is actually used for infringing purposes and TickBox encourages
such use.

TickBox also emphasizes that the themes through which Device users are able to
access (via addons such as Covenant) copyrighted content “are not the [Device], and
… have absolutely nothing to do with Defendant.” (Opp. at 3). But the evidentiary
record establishes that, at least prior to Plaintiffs’ filing of the Motion, TickBox pre-
loaded the Device with third-party themes that provided easy access to copyrighted
content and actually directed Device users to “install a theme” in order to gain access
to the (since renamed) “WATCH MOVIES TV SPORTS” option on the home screen.

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TickBox has also instructed its customers to try the “Wookie Theme” when other
themes were not functioning well. In short, TickBox’s behavior was hardly passive
with respect to the themes.

Evidence of Device users’ access to Plaintiffs’ content. “To prove copyright
infringement on an inducement theory, [a plaintiff must] adduce ‘evidence of actual
infringement’ by users” of the defendant’s device. Fung, 710 F.3d at 1034 (quoting
Grokster, 545 U.S. at 940). Professor Foster’s repeated access to Plaintiffs’
copyrighted content via the Device is sufficient evidence of actual access to that
content by Device users. See Arista Records LLC v. Lime Group LLC, No. 06 CV
5936 (KMW), 2011 WL 1641978, at *8 (S.D.N.Y. Apr. 29, 2011) (“Courts have
consistently relied upon evidence of downloads by a plaintiff’s investigator to establish
both unauthorized copying and distribution of a plaintiff’s work.”) (collecting cases);
Arista Records LLC v. Usenet.com, Inc., 633 F. Supp. 2d 124, 150 n. 16 (S.D.N.Y.
2009) (“Defendants’ argument that these downloads are not proof of unauthorized
copying because Plaintiffs had ‘authorized’ the downloads by their investigators is
without merit. Courts routinely base findings of infringement on the actions of
plaintiffs’ investigators.”) (collecting cases). Moreover, TickBox’s CEO, Mr.
Goldstein, stated that “[i]f a user of [the Device] were to access unauthorized content,
TickBox … would not have any way of knowing about such use…” (Goldstein Decl. ¶
21). If TickBox itself does not know what content Device users have accessed, it is not
clear how Plaintiffs might go about gathering such evidence at this early stage of the
action. The Court thus rejects TickBox’s argument that Plaintiffs have failed to
produce evidence of Device users’ access to Plaintiffs’ content.

Infringement of Plaintiffs’ public performance right. Broadcasting
copyrighted video content to the public over the internet without authorization
infringes upon the copyright owner’s public performance right. See, e.g., American
Broadcasting Companies, Inc. v. Aereo, Inc., 134 S. Ct. 2498, 2509-10 (2014)
(streaming television programming to subscribers over the internet violated program
owners’ public performance rights); WPIX, Inc. v. ivi, Inc., 691 F.3d 275, 278-79 (2d
Cir. 2012) (same). TickBox does not dispute this, but argues that it is third parties (i.e.,

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the creators of addons, such as Covenant, and/or the those who operate the disparate
streaming video sources that the addons access) who are violating Plaintiffs’ public
performance rights by broadcasting streaming versions of Plaintiffs’ content to the
public, not Device users who are merely viewing that streaming content. (See Opp. at
5-7). Citing Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007),
TickBox contends that “merely viewing copyrighted material online, without
downloading, copying, or retransmitting such material, is not actionable.” (Opp. at 7).

In Perfect 10, the district court had preliminarily enjoined Google (one of the
multiple defendants) from creating and publicly displaying thumbnail versions of the
plaintiff’s copyrighted pictures of nude models, but did not enjoin Google from linking
to third-party websites that displayed the plaintiff’s pictures. See Perfect 10, 508 F.3d
at 1154. The Ninth Circuit agreed with the district court’s analysis that, because there
was no evidence that individual Google users had downloaded (rather than simply
viewed) the plaintiff’s copyrighted photographs of nude models and because a
computer’s reproduction of those images by way of “cache” copies was fair use, the
individual Google users (who viewed the images via Google’s search engine) did not
directly infringe the plaintiff’s copyrights. See id. at 1169-70. But the Court disagreed
with the district court’s conclusion that Google could not be contributorily liable under
Grokster on the basis of the assistance it provided to third-party websites to display the
plaintiff’s images and to Google users to access those websites. See id. at 1172.
“Google could be held contributorily liable if it had knowledge that infringing Perfect
10 images were available [through third-party websites] using its search engine, could
take simple measures to prevent further damage to Perfect 10’s copyrighted works, and
failed to take such steps.” Id. Thus, while Google could not be held liable under a
contributory infringement theory based solely upon its individual users viewing (but
not downloading) Perfect 10’s images, it could be held liable based on the fact that its
users were accessing those images through links on Google’s search engine to third-
party websites that were directly infringing Perfect 10’s rights under the Copyright Act
by displaying its images. See id.

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Perfect 10 is thus instructive in this case, though not in the way that TickBox
would like. Here, as in Perfect 10, the defendant provides a device or service that its
customers utilize to access copyrighted content that is displayed or broadcasted by
third parties without authorization. Here, as in Perfect 10, the actions of the
defendant’s customers (i.e., viewing still images or motion pictures without
downloading them), standing on their own, do not infringe upon any of the plaintiffs’
exclusive rights under the Copyright Act. Here, as in Perfect 10, the defendant’s
device or service is funneling users to third parties that are directly infringing upon the
plaintiffs’ exclusive rights under the Copyright Act (i.e., displaying copyrighted
images or broadcasting copyrighted video content). See id. at 1172 (“There is no
dispute that Google substantially assists websites to distribute their infringing copies to
a worldwide market and assists a worldwide audience of users to access infringing
materials.”). Absent viewers, including Device users, the third-party streamers of
video content would have no audience to broadcast unauthorized versions of Plaintiffs’
(and others’) copyrighted works to, and thus would not be infringing upon Plaintiffs’
public performance rights. But there is an audience, and the Device (via the pre-
installed themes and the addons within those themes), by aggregating various
unauthorized sources of copyrighted work and simplifying the process of accessing
that work, undoubtedly enlarges that audience and thereby enlarges the scope of the
infringement. In sum, as with Google in Perfect 10, TickBox may be held
contributorily liable under Grokster and Fung because it has served as the intermediary
between third parties who directly infringe upon Plaintiffs’ public performance rights
and its customers, who become a necessary component of the infringement (i.e., the
audience).

In sum, the “acts of infringement” prong of the Fung test has been established.

3. An object of promoting the device’s use to infringe copyright

“The third, usually dispositive, requirement for inducement liability is that the
‘device’ or service be distributed ‘with the object of promoting its use to infringe
copyright, as shown by clear expression or other affirmative steps taken to foster
infringement.’” Fung, 710 F.3d at 1034 (quoting Grokster, 545 U.S. at 936-37).
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“[J]ust as Sony did not find intentional inducement despite the knowledge of the
[Betamax] manufacturer that its device could be used to infringe …, mere knowledge
of infringing potential or of actual infringing uses would not be enough here to subject
a distributor to liability.” Grokster, 545 U.S. at 937.

Advertisements. “The classic instance of inducement is by advertisement or
solicitation that broadcasts a message designed to stimulate others to commit
violations.” Id. There is ample evidence that, at least prior to Plaintiffs’
commencement of this action, TickBox explicitly advertised the Device as a means to
accessing unauthorized versions of copyrighted audiovisual content. As discussed
above:

• TickBox advertised the Device as a way to “cut the cord” if “you’re sick
of paying high monthly fees and expensive bills for your regular cable …
and premium channels like HBO and SHOWTIME … [o]r if you’re tired
of wasting money with online streaming services like Netflix, Hulu, or
Amazon Prime…”

• TickBox advertised the Device as a way to “enjoy unlimited access to
ALL the hottest TV shows, Hollywood blockbusters and LIVE sporting
events in one convenient little device … ABSOLUTELY FREE.”

• TickBox advertised that the Device “searches the internet where it will
locate and stream … virtually any television show [or] [H]ollywood
movie … without you having to worry about paying rental fees or
monthly subscriptions.”

• TickBox advertised the Device as a means to “Get Instant Access to Any
Movie, TV Show, or Sporting Events … Without Signing a Contract or
Paying a Monthly Service Fee.”

TickBox argues that its situation is distinguishable from the defendant’s in
Grokster because, in that case, the defendant had advertised itself as a replacement for
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another illicit song-sharing service (Napster), whereas TickBox’s “place in the market
does not replace or compete with some known copyright infringe[r]; it competes with
other streaming hardware services, including the ‘Firestick’ sold by affiliates of
Plaintiff Amazon…” (Opp. at 8). The Court’s analysis in Grokster did not turn on the
type of competitor the defendant was trying to displace; it turned on whether the
defendant advertised its product as a means of accessing infringing content. See
Grokster, 545 U.S. at 938 (“Grokster distributed an electronic newsletter containing
links to articles promoting its software’s ability to access popular copyrighted music.”).
Here, TickBox advertised the Device as a means of accessing a trove of copyrighted
content for “free.” Whether its aim was to take business away from other known
infringers or legitimate video-streaming services is irrelevant.

Customer support. Apart from advertising, a defendant may express its object
of promoting infringement by issuing “communications that, while not in haec verba
promoting infringing uses, provide[ ] information actively supporting such uses.”
Fung, 710 F.3d at 1035. In Grokster, such communications included “responding
affirmatively to requests for help in locating and playing copyrighted materials.”
Grokster, 545 U.S. at 938.

As discussed above, at least prior to this lawsuit, TickBox affirmatively
provided instructions to Device owners concerning how to effectively access
copyrighted material via the pre-loaded themes:

• TickBox’s website contained a “How to search for a Movie” instructional
video, which urged users to utilize the “Select Your Theme” option on the
home page.

• TickBox has advised customers to try other themes, such as the “Wookie
Theme,” when certain themes were not functioning well.

• On its “Frequently Asked Questions” page, TickBox advised customers
that “within a few days of using [the Device] you will find that you no
longer need those subscriptions [to Amazon Video, Netflix, or Hulu].”
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Lack of filtering mechanisms. While the failure to “develop filtering tools or
other mechanisms to diminish the infringing activity” that a device otherwise enables
does not, on its own support a finding of contributory infringement, it may, in the
presence of other evidence, “underscore[ ] [a defendant’s] intentional facilitation of
[its] users’ infringement.” Grokster, 545 U.S. at 939 n. 12. TickBox does not dispute
that the Device is devoid of any mechanisms to curb users’ access to infringing
content. Given the presence of affirmative inducement-related activity, in the form of
advertisements and customer support, the lack of any filtering mechanisms
“underscores [TickBox’s] intentional facilitation” of infringement.

Infringement-related profits. In Grokster, the Court noted that the defendants
“make money by selling advertising space,” which was dependent on “high-volume
use, which the record shows is infringing.” Id. at 940. While evidence of
infringement-related profits “alone would not justify an inference of unlawful intent,
… viewed in the context of the entire record its import [was] clear.” Id. TickBox
argues that it “does not profit if its users access unauthorized content.” (Opp. at 8).
TickBox ignores the fact that many customers would presumably not have purchased
the Device in the first place if they had not been convinced that they would be able to
use it to access unauthorized content. Accordingly, the fact that TickBox undoubtedly
sold more Devices than it otherwise would have as a result of affirmatively advertising
it as a means of accessing unauthorized content underscores TickBox’s illicit intent.

In sum, given the evidence of advertising, customer support, the lack of filtering
mechanisms, and infringement-related profits, the third prong of the Fung test is
satisfied.

4. Causation

In Fung, the Ninth Circuit explicitly discussed causation as necessary
component of liability under the Grokster inducement theory where the Supreme Court
in Grokster had not. See Fung, 710 F.3d at 1037 (“Grokster … mentions causation
only indirectly, by speaking of ‘resulting acts of infringement by third parties.’”)
(emphasis in original). Faced with the parties’ competing interpretations of what the
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Grokster Court meant by “resulting acts of infringement,” the Ninth Circuit found the
plaintiffs-appellees’ broader interpretation that a plaintiff “need only prove that the
‘acts of infringement by third parties’ were caused by the product distributed or
services provided [by defendants]” more compelling than the defendants-appellants
narrower interpretation that “the infringement must be caused … by the inducing
messages themselves.” Id.

“[I]f one provides a service that could be used to infringe copyrights, with the
manifested intent that the service actually be used in that manner, that person is liable
for the infringement that occurs through the use of that service.” Id. In other words,
“where there is sufficient evidence of fault – that is, an unlawful objective –
distributors are liable for causing the infringement that resulted from use of their
products.” Id. at 1038.

There is sufficient evidence that the Device can be and is used to access
infringing content, and there is sufficient evidence of TickBox’s fault – primarily in the
form of its advertisements and customer-support efforts. While there are undoubtedly
other avenues to access infringing content than the Device (via the pre-installed themes
and addons), the Device is one such avenue, and one that is user friendly and requires
no particular knowledge or effort. TickBox obviously has not “caused” third parties to
broadcast Plaintiffs’ (or others’) copyrighted works over the internet, at least in any
direct sense. But TickBox, through the Device, has delivered to those third parties
viewers they would not otherwise have had, broadening those third parties’ audiences
and the scope of their infringement. TickBox may be held responsible for the instances
of infringement that would not have otherwise occurred in the absence of the Device.

In sum, the “causation” prong of Fung is satisfied, and Plaintiffs have thus
established that they are likely to succeed on the merits of their Grokster / Fung
inducement liability claim against TickBox.

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B. Irreparable Harm

“A preliminary injunction may issue only upon a showing that ‘irreparable
injury is likely in the absence of an injunction.’” Disney Enterprises, Inc. v. VidAngel,
Inc., 869 F.3d 848, 865 (9th Cir. 2017) (quoting Winter, 555 U.S. at 22) (emphasis in
original). Plaintiffs argue that, in the absence of a preliminary injunction, they are
likely to suffer the following types of irreparable harm: (1) deprivation of “their
exclusive rights to control how, when, and to whom they will disseminate their
Copyrighted Works”; (2) the undermining of “the legitimate market in which
consumers can purchase access to these same works”; and (3) disruption of “Plaintiffs’
relationships and goodwill with authorized licensees.” Apart from rehashing the
merits-related arguments that Plaintiffs “have failed to show that [Device] users have
actually downloaded such software [the themes and addons] or accessed Plaintiffs’
copyrighted works, or that such access would infringe Plaintiffs’ rights” (Opp. at 13),
which the Court has already considered and rejected, TickBox does not contest
Plaintiffs’ arguments regarding irreparable harm. Plaintiffs have made an ample
showing that they are likely to suffer irreparable harm absent a preliminary injunction.

In support of their irreparable harm arguments, Plaintiffs have filed a declaration
from David Kaplan, a senior vice president and intellectual property counsel at
Plaintiff Warner Bros. (Declaration of David P. Kaplan (“Kaplan Decl.”)). Mr.
Kaplan explains that Warner Bros., like other movie studios, “utilizes a practice that is
known as ‘windowing’” whereby Warner Bros. makes its works “available through
different distribution channels at different times following the initial theatrical release
of a particular title,” and “[d]istributors and licensees generally will pay more for the
right to distribute or perform movies in an earlier window – when the content is new,
or newer – than for comparable rights during later windows.” (Kaplan Decl. ¶ 8).
Beyond losing out on the compensation it would otherwise receive if Device users
were forced to view authorized versions of Warner Bros. copyrighted work (rather than
free, unauthorized versions), Mr. Kaplan explains TickBox (via the Device) interferes
with Warner Bros.’ windowing strategy and its relationships with distributors and
licensees. (See id. ¶¶ 14-21). He explains:

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Because TickBox operates free from licensing restrictions, its
distribution of TickBox TV [the Device] has the result of
making our content available during windows occupied by
different distribution channels or exclusivity periods held by
authorized distributors or licensees. For example, new
releases are, following their theatrical release, first released
to distributors that sell digital download copies or physical
copies on DVDs or Blu-ray discs. During these initial home
entertainment release windows, Warner Bros.’ movies
generally are not available for VOD [video-on-demand]
streaming. TickBox TV, however, offers Defendant’s
customers access to numerous links to newly released titles
without regard for these exclusive windows. The effect of
this is to interfere with and undermine Warner Bros.’
contractual commitments to and relationships with its
distributors and licensees, and to undermine Warner Bros.’
negotiating position for future agreements with authorized
distributors and licensees.

(Id. ¶ 18).

Mr. Kaplan also explains that TickBox threatens the entire market for authorized
in-home video streaming:

Defendant’s [Device] poses a significant threat to the entire
legitimate market for home entertainment, and in particular,
for the online distribution market. Defendants’ [sic]
unlicensed offering further threatens the development and
growth of the legitimate on-demand streaming market
because use of the device inculcates Defendant’s customers
to believe that high-speed and high-quality content can be
accessed at no cost and with no advertisements. This

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threatens the very foundation of Warner Bros.’ business and
the businesses of its distributors and licensees.

(Id. ¶ 31).

Mr. Kaplan’s declaration is uncontroverted and, at least as to the portions relied
upon by the Court, persuasive. Moreover, the harms he has cited – interference with
relationships with distributors and licensees, and the undermining of the market and
Warner Bros.’ business model more generally – have been recognized as sufficiently
irreparable to support the issuance of a preliminary injunction. See, e.g., VidAngel, 869
F. 3d at 866 (affirming issuance of preliminary injunction where “[t]he district court
had substantial evidence before it [in the form of an uncontested declaration] that
VidAngel’s service undermines the value of the Studios’ copyrighted works, their
‘windowing’ business model, and their goodwill and negotiating leverage with
licensees”).

Additionally, it is unlikely that money damages could adequately compensate for
difficult-to-quantify harms to Plaintiffs’ business models and relationships. TickBox
does not argue otherwise. See id. (“although VidAngel argues that damages could be
calculated based on licensing fees, the district court did not abuse its discretion in
concluding that the loss of goodwill, negotiating leverage, and non-monetary terms in
the Studios’ licenses cannot readily be remedied with damages”).

Accordingly, Plaintiffs have established that they are likely to suffer irreparable
harm absent a preliminary injunction.

C. Balance of the Equities and Public Interest

Before issuing a preliminary injunction, a court “must balance the competing
claims of injury and must consider the effect on each party of the granting or
withholding of the requested relief.” Winter, 555 U.S. at 24 (internal quotation marks
and citation omitted).

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CIVIL MINUTES—GENERAL 32
Case 2:17-cv-07496-MWF-AS Document 40 Filed 01/30/18 Page 33 of 35 Page ID #:657

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

The harms that Plaintiffs are likely to suffer in the absence of a preliminary
injunction – including the undermining of their business relationships and overall
business models – are discussed above. TickBox argues that the specific injunction
that Plaintiffs propose would “shut down Defendant’s business, impound all of
Defendant’s inventory, and require Defendant to hack into and delete content which its
customers have downloaded to the [Device]…” (Opp. at 12-13).

The Court will not issue an injunction that prohibits TickBox from distributing
the Device entirely or that requires TickBox to “hack into” its customers’ Devices.
The Court is inclined, however, issue an injunction that: (1) prohibits TickBox from
distributing any Device that is, in any manner, pre-loaded with any “themes” that,
directly or indirectly, provide access to unauthorized versions of Plaintiffs’ copyrighted
works; and (2) requires TickBox to perform a software update (as it has done very
recently) that removes all such “themes” from all Devices that TickBox has already
distributed.

Assuming the Device is useful for purposes other than accessing infringing
content, an injunction of this scope will not “shut down Defendant’s business” as
TickBox contends. In the event that such an injunction does shut TickBox down, that
will be indicative not of an unjustifiably burdensome injunction, but of a nonviable
business model. See Warner Bros. Entertainment Inc. v. WTV Systems, Inc., 824 F.
Supp. 2d 1003, 1014-15 (C.D. Cal. 2011) (“Defendants ‘cannot complain of the harm
that will befall them when properly forced to desist from their infringing activities.”)
(quoting Triad Systems Corp. v. Southeastern Exp. Co., 64 F.3d 1330, 1338 (9th Cir.
1995)) (alterations omitted).

Finally, the Court concludes that the issuance of an appropriately tailored
preliminary injunction is in the public interest. The Court’s injunction will not prohibit
TickBox from developing or distributing the Device; it will prohibit TickBox from
distributing the Device in its current form – that is, preloaded with themes that provide
easy access to unauthorized versions of Plaintiffs’ copyrighted work. To the extent the
Device is useful for non-infringing purposes, the public will still enjoy access to it.
“On the other hand …, ‘the public has a compelling interest in protecting copyright
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CIVIL MINUTES—GENERAL 33
Case 2:17-cv-07496-MWF-AS Document 40 Filed 01/30/18 Page 34 of 35 Page ID #:658

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

owners’ marketable rights to their work and the economic incentive to continue
creating television programming’ and motion pictures.” VidAngel, 869 F.3d at 867
(quoting WPIX, 691 F.3d at 287).

A preliminary injunction is in the public interest, and the balance of hardships
between the parties supports the issuance of a preliminary injunction. Accordingly, all
preconditions for the issuance of a preliminary injunction have been satisfied.

As noted at the outset, however, outstanding questions pertaining to offending
themes and addons, and TickBox’s ability to remove already-downloaded offending
themes and addons from its users’ Devices, prevent the Court at this time from issuing
a preliminary injunction that goes beyond maintaining the status quo. The parties shall
thus work together to gather answers to these outstanding questions and attempt to
agree upon a stipulated preliminary injunction.

D. Post-Litigation Modifications

TickBox argues that, “after receiving Plaintiffs’ Complaint, [it] voluntarily took
steps to remove links to download those Themes [referenced in the Complaint] on the
[Device],” that it inadvertently failed to remove some themes, and that all themes that
Plaintiffs have specifically complained about “have now been removed from the
[Device] interface.” (Opp. at 10). Thus, according to TickBox, “there is no need for
an injunction because there is nothing to restrain.” (Id.).

TickBox’s voluntary cessation of infringing activity would not render the
Motion moot unless it were “absolutely clear that the allegedly wrongful behavior
could not reasonably be expected to recur.” LGS Architects, Inc. v. Concordia Homes
of Nevada, 434 F.3d 1150, 1153 (9th Cir. 2006) (quoting Adarand Constructors, Inc. v.
Slater, 528 U.S. 216, 222 (2000)); see also Rouser v. White, 707 F. Supp. 2d 1055,
1071 (E.D. Cal. 2010) (voluntary cessation does not preclude issuance of preliminary
injunction). Absent an injunction, there is nothing preventing TickBox from again
promoting the offending themes to Device users. Moreover, as Plaintiffs point out, as
of January 4, 2018, after TickBox’s most recent software update, Professor Foster still
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CIVIL MINUTES—GENERAL 34
Case 2:17-cv-07496-MWF-AS Document 40 Filed 01/30/18 Page 35 of 35 Page ID #:659

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-7496-MWF (ASx) Date: January 30, 2018
Title: Universal City Studios Productions LLLP, et al. v. TickBox TV LLC

had access to the “Paradox” theme and all of the addons therein (including Covenant)
that he had previously downloaded. So it is clear that TickBox has not taken any steps
to remove previously-downloaded themes that provide ready access to Plaintiffs’
copyrighted works from its Devices. Whether this is ultimately possible or feasible is
still an open question.

Accordingly, TickBox’s post-litigation modifications have not mooted the
Motion.

III. CONCLUSION

For the foregoing reasons, the Motion is GRANTED. An initial preliminary
injunction that maintains the status quo will issue in a separate order.

Counsel for Plaintiffs and TickBox, working with others who possess relevant
technical expertise as necessary, shall negotiate and attempt to reach agreement upon a
stipulated preliminary injunction that will supersede the Court’s initial preliminary
injunction order. If counsel are able to reach an agreement, they shall file a stipulated
preliminary injunction order by February 7, 2018. In the event that counsel are
unable to reach an agreement, Plaintiffs and TickBox shall each file a proposed
preliminary injunction order along with a memorandum of law, not to exceed seven
pages, explaining their positions by February 12, 2018.

IT IS SO ORDERED.

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CIVIL MINUTES—GENERAL 35